10884205 (B.P.A.I. May. 15, 2012)

Ex Parte Jacob et al

Board of Patent Appeals and InterferencesMay 15, 2012

10884205 (B.P.A.I. May. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/884,205 07/02/2004 Cherian Jacob GLOZ 2 00186 5924 7590 05/15/2012 Scott A. McCollister, Esq. Fay, Sharpe, Fagan, Minnich & McKee, LLP 7th Floor 1100 Superior Avenue Cleveland, OH 44114-2518 EXAMINER NADAV, ORI ART UNIT PAPER NUMBER 2811 MAIL DATE DELIVERY MODE 05/15/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte CHERIAN JACOB, CHEN-LUN HSING CHEN, EMIL RADKOV, ALOK MANI SRIVASTAVA, ANANT ACHYUT SETLUR, HOLLY ANN COMANZO, and JOSEPH SHIANG ____________________ Appeal 2010-001483 Application 10/884,205 Technology Center 2800 ____________________ Before: JOSEPH L. DIXON, LANCE LEONARD BARRY, and JAMES R. HUGHES, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-001483 Application 10/884,205 2 STATEMENT OF CASE The Patent Examiner rejected claims 1-6, 8, 101-19, 21, and 22. The Appellants appeal therefrom under 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). INVENTION Claim 1, which follows, is illustrative of the claimed subject matter. 1. An edge lit lighting assembly comprising an LED [, i.e., light emitting diode] light source; an optically transmissive lightguide having an input surface, a back surface, and an output surface; and a radiation conversion material capable of absorbing at least a portion of the radiation at a first wavelength emitted by the LED and emitting a second radiation at a second wavelength; wherein said radiation conversion material is coated on said output surface of said lightguide. REFERENCES AND REJECTIONS Srivastava Wang Ju US 2003/0067008 A1 US 6,752,507 B2 US 6,871,972 B2 Apr. 10, 2003 June 22, 2004 Mar. 29, 2005 1 Claim 10 depends from claim 9, which has been cancelled. Appeal 2010-001483 Application 10/884,205 3 Claims 1-4, 6, 8, 10, 12-17, 19, and 21 stand rejected under 35 U.S.C Â§ 102(e) as being anticipated by Ju. Claims 5, 18, and 22 stand rejected under 35 U.S.C Â§ 103(a) as being unpatentable over Ju in vew of Srivastava. Claims 11 stands rejected under 35 U.S.C Â§ 103(a) as being unpatentable over Ju in view of Wang. Claim 21 stands rejected under 35 U.S.C Â§ 103(a) as being unpatentable over Wang in view of Ju. DISCUSSION Based on the dependencies of the claims, we will decide the appeal of claims 1-6, 8, 10-19, 21, and 22 that rely on Ju as the sole or primary reference on the basis of independent claims 1, 5, 21, and 22. We will decide the appeal of claim 21 relying on Wang as the primary reference individually. Therefore, the issues before us follow. Did the Examiner err in finding that Ju discloses radiation conversion material is coated on an output surface of a lightguide, as required by independent claims 1, 5, and 22, or coated on an output surface of an ultraviolet ("UV") reflective layer, as required by independent claim 1? Did the Examiner err in finding that the combined teachings of Wang and Ju would have suggested the limitations required by claim 21? We address the issues seriatim. REJECTIONS THAT RELY ON JU AS THE SOLE OR PRIMARY REFERENCE "It is axiomatic that anticipation of a claim under Â§ 102 can be found only if the prior art reference discloses every element of the claim, and that Appeal 2010-001483 Application 10/884,205 4 anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). Here, the Examiner finds that "Ju teaches dispersing phosphor (a radiation conversion material) throughout [its] light-guide . . . . In other words, the phosphor is . . . coating the side of the output surface of the light- guide which is internal to the light-guide." (Ans. 8.) We are unpersuaded, however, that just because the reference's light- guide contains phosphor, the phosphor is coated on an output surface of the light-guide. Not recognizing the aforementioned deficiency of Ju, the Examiner does not allege, let alone show, that the addition of Srivastava or Wang cures the deficiency. Therefore, we conclude that the Examiner erred in finding that Ju discloses radiation conversion material is coated on an output surface of a light-guide, as required by independent claims 1, 5, and 22, or coated on an output surface of a UV reflective layer, as required by independent claim 21. REJECTION THAT RELIES ON WANG AS THE PRIMARY REFERENCE "Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue . . . the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection." Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citations omitted). Here, the Examiner finds that "Wang et al. teach substantially the entire claimed structure, except explicitly stating that the LED is a UV Appeal 2010-001483 Application 10/884,205 5 LED," (Ans. 9), and that "Ju teaches an LED being a UV LED." (Id. at 7.) The Appellants contest none of these findings. We decline to unilaterally review these aspects of the rejection. The Appellants use the Reply Brief to introduce the following new argument: "Ju does not teach a UV reflective layer that is separate from the LED light source . . . ." (Reply Br. 4.) "Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived." Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative); see also Optivus Tech., Inc. v. Ion Beam Applâ€™ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not raised by an appellant in its opening brief . . . is waived.") (citations and quotation marks omitted). Because the findings that the Examiner makes in his Answer are identical to that in the Final Rejection (pp. 6-7), from which the instant appeal was taken, we find nothing that would have prompted the new argument in the Reply Brief. The Appellants could have made the argument in their Appeal Brief. The term "Reply Brief" is exactly that, a brief in reply to new rejections or new arguments set forth in an Examinerâ€™s Answer. The Appellants may not present arguments in a piecemeal fashion, holding back arguments until an examiner answers the original brief. This basis for asserting error is waived. Therefore, we conclude that the Examiner did not err in finding that the combined teachings of Wang and Ju would have suggested the limitations required by claim 21. Appeal 2010-001483 Application 10/884,205 6 DECISION We reverse the rejection of claims 1-4, 6, 8, 10, 12-17, 19, and 21 as being anticipated by Ju; the rejection of claims 5, 18, and 22 as being unpatentable over Ju in vew of Srivastava; and the rejection of claim 11 as being unpatentable over Ju in view of Wang. In contrast, we affirm the rejection of claim 21 as being unpatentable over Wang in view of Ju. No time for taking any action connected with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1). See 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED-IN-PART llw